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August 20, 2010 / Nate Harris

Vanisha Mittal v. info@setrillonario.com

Summary of Vanisha Mittal v. info@setrillonario.com
(WIPO Case No. D2010-0810)
Filed May 20, 2010; Decided August 8, 2010 (Panelist: Warwick Smith)

Domain Name: <vanishamittal.com>

vanishamittal.com

vanishamittal.com (as of Nov. 22, 2008)

The Parties and Non-Parties

Complainant Vanisha Mittal is a director of Arcelor Mittal S.A. (“the Company”), one of the largest steel manufacturers in the world. She is also the daughter of the company’s CEO, Lakshmi Mittal.

The Respondent, identified only by the email address info@setrillonario.com, registered the disputed domain name on July 29, 2007. The content of the site has since changed frequently, but in general the Respondent used the disputed domain (along with a Youtube page) to highlight the wealth of Ms. Mittal and her family, and contrast that wealth with the plight of the impoverished around the world. For example, the disputed domain hosted a video of Ms. Mittal’s wedding with the text “$60,000,000” emblazoned over the video. Both the disputed domain and the Youtube page suggested that Ms. Mittal could buy the disputed domain name for a “record” amount of money, which would be given to “a named church, to children who have no food,” and to mysterious “others.”

Procedural History

An earlier complaint was filed by Ms. Mittal and the Company seeking transfer of the disputed domain along with another domain name, <vanishamittal.me>, owned by the Respondent. However, WIPO advised the Complainant that the .me domain should be the subject of a separate proceeding (which it was,  DME2010-0006). Accordingly, Ms. Mittal brought the present complaint as the sole Complainant, seeking transfer only of the disputed domain.

On July 1, Ms. Mittal sought to add a claim to recover <vanishamittalbhatia.com> (her married name), another domain owned by the Respondent. Because the Panelist (SPOILER ALERT!) denied this complaint, the request was denied on the ground that it would delay the proceedings without affecting the result.

Identical or Confusingly Similar

According to Ms. Mittal, “Vanisha Mittal” is known around the world as part of the Company’s mark. Thus, according to her argument, she owns common law rights in her personal name under Jeanette Winterson v. Mark Hogarth (WIPO Case No. D2000-0235) and other precedent. To support her argument, Ms. Mittal submitted evidence of the Company’s rights in the mark.

As the Panel points out, however, the Complainant  is Ms. Mittal, not the Company, and there is no evidence that the Company gave its consent for Ms. Mittal to bring the complaint on its behalf. Therefore, Ms. Mittal must show that she personally has right in a mark that is identical or confusingly similar to the disputed domain name.

The Panel first disposed with Ms. Mittal’s assertion that the domain is confusingly similar to the mark MITTAL, noting that Ms. Mittal has not offered evidence that she has rights in the mark, or is a valid licensee of the Company. That she is an employee of the Company is not sufficient; the Company has thousands of employees, each of whom presumably uses the mark MITTAL every day. Yet surely not every employee of the Company has rights under the UDRP. Rather, prior decisions extend rights only to armslength licensees—entities that are separate from the Company. Thus, “the license argument must fail.”

The Panel also found that Ms. Mittal’s personal name did not qualify for common law trademark rights. There was no evidence she was using her name in trade or commerce. Rather, “it is only possible to infer . . . that she is a celebrity in some parts of the world, and that she celebrated a lavish and expensive wedding.” [Ouch.] Yet celebrity status alone does not confer trademark rights. A celebrity using her personal name in conjunction with an offer of goods or services would have trademark rights as to those services; “[m]erely having a famous name, however, is not sufficient for there to be common law rights, even if the fame results from commercial activities.” [The right of publicity alone is not enough to establish rights under the UDRP. See Jay Leno v. Guadalupe Zambrano (WIPO Case No. D2009-0570).]

The Panel distinguished Jeanette Winterson on the ground that it dealt not with trademark infringement, but with the English tort of passing-off.

Because Ms. Mittal did not prove that she personally had rights in the mark, her claim failed.

Decision

The complaint is denied. However, Ms. Mittal and the Company were successful in the related case of ArcelorMittal Legal Affairs Corporate, Vanisha Mittal, Aditya Mittal v. All Illumination, Vanisha Mittal, info@setrillonario.com (Case No. DME2010-0006). In that decision, the fact that the Company is a Complainant provides the Panel with all the ammunition it needs to order the transfer of the domain. Furthermore, the Panel provided some clue as to the likelihood of success if the present complaint were brought by the proper party (i.e., the Company):

The decision makes no finding regarding the Respondent’s rights or legitimate interests in the disputed domain name (about which the Panel is highly doubtful), or the (at times, highly questionable) use and seeming offers to sell the disputed domain name (as described by the Panel above under Factual Background). The decision says nothing about any rights which the company ArcelorMittal might or might not be able to establish under the Policy, and in particular does not preclude any claim being brought by that company under the Policy with respect to the <vanishamittal.com> domain name, if it should choose to bring one.


Commentary

This is a well-written and well-reasoned decision that cites relevant decisions and quotes treatises.

Epilogue

8/19/2010: <vanishamittal.com> now points to a generic click-through page.

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